Trials@uspto.gov
`571-272-7822
`
`
`
`
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`Paper No. 49
`Filed: December 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO., LTD.
`Patent Owner.
`____________
`
`Case IPR2017-01483
`Patent 8,483,166 B2
`____________
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 49
`Filed: December 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO., LTD.
`Patent Owner.
`____________
`
`Case IPR2017-01483
`Patent 8,483,166 B2
`____________
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`IPR2017-01483
`Patent 8,483,166 B2
`
`
`A. Background
`
`I. INTRODUCTION
`
`Samsung Electronics Co., Ltd.1 (“Petitioner”) filed a Petition (Paper 2,
`
`“Pet.”) to institute inter partes review of claims 1–5 and 12–16 (“the
`
`challenged claims”) of U.S. Patent No. 8,843,166 B2 (Ex. 1001, “the ’166
`
`patent”). Huawei Technologies Co., Ltd. (“Patent Owner”) filed a
`
`Preliminary Response (Paper 10, “Prelim. Resp.”). Upon consideration of
`
`the Petition and Preliminary Response, we instituted review of claims 1–5 of
`
`the ’166 patent, but declined to institute review of claims 12–16. Paper 17,
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`35 (“Dec. Inst.”).
`
`Patent Owner filed a Response to the Petition, addressing only
`
`instituted claims 1–5. Paper 26 (“PO Resp.”). Subsequent to Patent
`
`Owner’s Response, the Supreme Court issued its decision in SAS Institute,
`
`Inc. v. Iancu, 138 S.Ct. 1348 (2018), holding that inter partes reviews may
`
`not be instituted on fewer than all claims challenged in a petition. We,
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`therefore, modified our Institution Decision to include review of previously
`
`non-instituted claims 12–16. Paper 27, 3. Patent Owner filed a
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`Supplemental Response limited to addressing these additional claims.
`
`Paper 32 (“PO Supp. Resp.”). Petitioner filed a Reply to the Response and
`
`Supplemental Response. Paper 34 (“Reply”). Patent Owner filed a Sur-
`
`Reply to Petitioner’s Reply. Paper 42 (“PO Sur-Reply”). We held an oral
`
`hearing on September 25, 2018, and the hearing transcript is included in the
`
`record. See Paper 48 (“Tr.”).
`
`
`1 Samsung identifies Samsung Electronics America, Inc. and Samsung
`Research America as real parties-in-interest. Pet. 3.
`
`2
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`
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`IPR2017-01483
`Patent 8,483,166 B2
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`We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
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`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`
`set forth below, we find Petitioner has shown by a preponderance of the
`
`evidence that claims 1–5 of the ’166 patent are unpatentable, but has failed
`
`to show by a preponderance of the evidence that claims 12–16 are
`
`unpatentable.
`
`B. Related Matters
`
`Petitioner identifies the following as matters that could affect, or be
`
`affected by, a decision in this proceeding: Huawei Techs. Co., Ltd. v.
`
`Samsung Elec. Co., Ltd., Case No. 3:16-cv-02787 (N.D. Cal.). Pet. 3.
`
`Patent Owner identifies the same matter, as well as U.S. Patent No.
`
`9,084,159 and pending U.S. Patent App. No. 14/752,426, which are the child
`
`and grandchild, respectively, of the’166 patent. Paper 5, 1.
`
`C. Evidence Relied Upon2
`
`Reference
`
`Date
`
`Exhibit
`
`Intra-domain connection of Radio Access Network
`(RAN) nodes to multiple Core Network (CN) nodes
`(Release 7), 3rd Generation Partnership Project,
`3GPP TS 23.236 V7.0.0 (2006–12) (“TS 23.236”).
`3GPP System Architecture Evolution: Report on
`Technical Options and Conclusions (Release 7),
`3rd Generation Partnership Project, 3GPP
`TR 23.882 V1.12.0 (2007-10) (“TR 23.882”)
`
`
`Dec. 8,
`2006
`
`
`1004
`
`Oct. 25,
`2007
`
`1005
`
`
`2 Petitioner also relies upon the Declarations of Raziq Yaqub, Ph.D.
`(Ex. 1012), and Tim Arthur Williams, Ph.D. (Ex. 1014). Patent Owner
`relies on the Declaration of Dr. Mark Mahon (Ex. 2002).
`
`
`
`3
`
`
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`IPR2017-01483
`Patent 8,483,166 B2
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`Reference
`
`Discussion on the structure of S-TMSI, China
`Mobile and Huawei, 3GPP TSG SA WG2
`Meeting #59, (“S2-073255”).
`US 2007/0248064 A1
`
`Shaheen
`
`
`
`D. Instituted Grounds of Unpatentability
`
`Date
`
`Exhibit
`
`Aug. 22,
`2007
`
`Oct. 25,
`2007
`
`1006
`
`1007
`
`References
`
`Basis
`
`Claim(s) Challenged
`
`TS 23.236 and S2-073255
`
`§ 103(a)
`
`1–3, 5, 12–14, and 16
`
`TS 23.236, S2-073255, and
`TR 23.882
`TS 23.236, S2-073255, and
`Shaheen
`TS 23.236, S2-073255, TR 23.882
`and Shaheen
`
`§ 103(a)
`
`4 and 15
`
`§ 103(a)
`
`12–14 and 16
`
`§ 103(a)
`
`15
`
`II. ANALYSIS
`
`A. The ’166 Patent
`
`The ’166 patent is directed toward a method and apparatus for
`
`allowing user equipment (UE) to access a legacy network, such as a 2G/3G
`
`network, via a temporary ID obtained from an evolved or LTE network.
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`Ex. 1001, 1:19–23, Abstract.
`
`According to the ’166 patent, when a UE initially joins a 2G/3G
`
`network, it is attached to a Serving GPRS Support Node (SGSN), which
`
`assigns a Packet Temporary Mobile Station Identity (P-TMSI) to the UE.
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`Id. at 2:18–21. The P-TMSI is a 32-bit word that includes a 10-bit Network
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`Resource Identify (NRI) used to identify the assigning SGSN. Id. at 5:30–
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`43. When the UE moves from one Radio Access Node (RAN) in the
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`network to another, the UE sends a Radio Resource Control (RRC) message
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`to the new RAN. Id. at 5:47–49. The RRC message includes P-TMSI and
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`Non Access Stratum (NAS) fields, and the NAS field includes a Radio
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`Access Update (RAU) message that includes P-TMSI and Radio Access
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`Identifier (RAI) fields. Id. at 5:49–52. The new RAN parses the P-TMSI
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`from the RRC message, and if it can locate the SGSN from the NRI field of
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`the P-TMSI, forwards the NAS field to the SGSN. Id. at 5:53–58. If the
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`RAN cannot locate the SGSN, it selects a new SGSN, and sends the NAS
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`field to the new SGSN. Id. at 5:58–60. The new SGSN parses the NAS
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`field to obtain the P-TMSI, NRI, and RAI, and uses them to send a Context
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`Request message to the old SGSN. Id. at 5:60–66. The new SGSN receives
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`a UE context from the old SGSN, and assigns new RAI and P-TMSI
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`identifiers to the UE. Id. at 5:67–6:4.
`
`Similar to the procedure discussed above for 2G/3G networks, when a
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`UE joins an LTE network, it is attached to a mobility management entity
`
`(MME) that assigns an SAE-TMSI to the UE. Ex. 1001, 7:31–36. The
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`SAE-TMSI may be longer than the 32 bit P-TMSI. Id. at 3:21–26. For
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`example, the SAE-TMSI may be 40 or 56 bits long. Id. at 9:21–25. When
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`the UE moves from an LTE network to a legacy 2G/3G network, the UE
`
`cannot simply replace the P-TMSI field of the RRC message with the longer
`
`SAE-TMSI of the LTE network. Accordingly, the UE adds “MME
`
`information for uniquely identifying an MME . . . to an access message sent
`
`to the old network.” Id. at 13:23–26. This allows the old or 2G/3G network
`
`to “determine and find the MME that is accessed by the UE in the evolved
`
`[LTE] network.” Id. at 13:23–28.
`
`According to the ’166 patent, different LTE or SAE networks have
`
`different configurations, and the MME information needed to identify an
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`5
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`MME depends on the network configuration. Ex. 1001, 7:43–45. For each
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`configuration, however, the MME information uniquely identifies the MME
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`in the network. Id. at 4:15–19, 6:9–16, 7:37–42, 13:23–26, 13:41–45,
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`15:60–62. For example, if an MME-id can uniquely identify the MME, the
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`MME information is the MME-id. Id. at 6:29–35, 7:46–51. In this case,
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`when the UE moves from the LTE network to a 2G/3G network, the MME-
`
`id is added to the P-TMSI and/or RAI fields of the 2G/3G RRC access
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`message. Id. If an MME-id and pool-id can uniquely identify the MME, the
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`MME information is the MME-id and pool-id. Id. at 6:35–38, 8:55–9:3. In
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`this case, when the UE moves from the LTE network to a 2G/3G network,
`
`the MME-id and pool-id are added to the P-TMSI and/or RAI fields of the
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`2G/3G RRC access message. Id. For example, the MME-id can be added to
`
`the NRI field of the P-TMSI, and the pool-id can be added to other fields of
`
`the P-TMSI or to certain fields of the RAI. Id. at 9:3–9. If an MME-id,
`
`pool-id, and PLMN-id (Public Land Mobil Network-id) uniquely identifies
`
`the MME, the MME information is the MME-id, pool-id, and PLMN-id. Id.
`
`at 6:38–40, 10:7–26. In this case, when the UE moves from the LTE
`
`network to a 2G/3G network, the MME-id, pool-id, and PLMN-id are added
`
`to the P-TMSI and/or RAI fields of the 2G/3G RRC access message. Id.
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`For example, the MME-id can be added to the NRI field of the P-TMSI, and
`
`the pool-id and PLMN-id can be added to other fields of the P-TMSI and/or
`
`to the RAI. Id. at 10:14–17. The RAI and P-TMSI can separately carry or
`
`together carry the pool-id and PLMN-id. Id. at 10:23–26.
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`6
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`Patent 8,483,166 B2
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`Figure 9 of the ’166 patent is reproduced below.
`
`
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`Figure 9 is a schematic illustration of an RRC message that is sent by a UE
`
`to a RAN of a 2G/3G network the UE wishes to access using the S-TMSI
`
`assigned to the UE by an MME in an LTE network. Ex. 1001, 4:43–44,
`
`11:39–41. As shown in Figure 9, the UE replaces the NRI portion of the P-
`
`TMSI field of the RRC message with the MME-id portion of the S-TMSI,
`
`replaces the P-TMSI field of the NAS message with the UE-id portion of the
`
`S-TMSI, and replaces portions of the RAI field of the NAS message with the
`
`pool-id and MME-id portions of the S-TMSI. Id. at 11:41–47.
`
`
`
`Of the challenged claims, claims 1 and 12 of the ’166 patent are
`
`independent. Other challenged claims depend directly or indirectly from
`
`claims 1 and 12. Claim 1 is representative of the challenged claims, and is
`
`reproduced below.
`
`1. A method for accessing a 2G/3G network
`comprising:
`
`obtaining, by a User Equipment (UE), a temporary
`identity (ID) allocated by a Mobility Management
`Entity (MME) in an evolved network, wherein the
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`7
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`IPR2017-01483
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`temporary ID comprises MME information for
`identifying the MME;
`
`adding, by the UE, the MME information from the
`temporary ID to a first P-Temporary Mobile Station
`Identity (P-TMSI) in an access message;
`
`sending, by the UE, the access message to a Radio
`Access Network (RAN) node in the 2G/3G
`network.
`
`Ex. 1001, 17:46–56. Claim 12 is similar in scope to claim 1, but recites user
`
`equipment comprising a receiver, a transmitter, and an MME information
`
`adding module for performing the method recited in claim 1. Compare id. at
`
`18:48–62, with id. at 17:46–56.
`
`B. Claim Construction
`
`The claim construction standard applicable to this inter partes review
`
`proceeding is the broadest reasonable interpretation in light of the
`
`specification. See 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs., LLC
`
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the rule of
`
`broadest reasonable interpretation, claim terms generally are given their
`
`plain and ordinary meaning, as would be understood by one of ordinary skill
`
`in the art in the context of the entire patent disclosure. See In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which
`
`are in controversy need be construed and only to the extent necessary to
`
`resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
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`200 F.3d 795, 803 (Fed. Cir. 1999). Except as indicated below, neither
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`Petitioner nor Patent Owner requests or provides express construction for
`
`any term in the challenged claims. Pet. 25–27; PO Resp. 12–18.
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`8
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`IPR2017-01483
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`1. Mobility Management Entity (MME) Information
`Adding Module
`
`Petitioner contends this term, explicitly recited in claims 12, 13, and
`
`16, should be construed as a means-plus-function limitation pursuant to
`
`35 U.S.C. § 112, ¶ 6. Pet. 26. Relying on the declaration testimony of Dr.
`
`Williams, Petitioner argues the term does not have an understood meaning in
`
`the art, and that the limitations of claims 12, 13, and 16 in which the term
`
`appears do not recite sufficient structure for performing the recited functions
`
`of the “MME information adding module.” Id. (citing Ex. 1014 ¶¶ 74–77).
`
`Those functions are: adding MME information from the temporary ID to a
`
`first P-TMSI in an access message (claim 12), setting the NRI field of the
`
`first P-TMSI in the access message to the MME-ID (claim 13), and adding
`
`MME information from the temporary ID to an NAS message carried in the
`
`access message (claim 16). Id.
`
`Petitioner argues the only structure for the MME information adding
`
`module described in the ’166 patent is the generic block diagram shown in
`
`Figure 11. Pet. 26–27 (citing Ex. 1001, 13:35–63). Petitioner further argues
`
`that block diagram simply consists of a group of generic submodules, all of
`
`which are described in terms of the functions they perform (e.g., NRI setting
`
`module) rather than in terms of specific hardware or software for performing
`
`those functions. Id. Therefore, Petitioner argues, claims 12, 13, and 16 are
`
`indefinite under 35 U.S.C. § 112, ¶ 2 because the ’166 patent fails to
`
`describe any structure corresponding to the recited functions performed by
`
`the MME information adding module. Id. Hedging its position, however,
`
`Petitioner identifies the corresponding structure as “software configured to
`
`perform the recited functions.” Id.
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`9
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`In our Institution Decision, we agreed with Dr. Williams’ unrebutted
`
`testimony that the term “MME information adding module” does not have
`
`an understood meaning in the art. Dec. Inst. 9. We also agreed that the
`
`claim limitation reciting the “MME information adding module” did not
`
`recite sufficient structure for performing the functions of that module. Id.
`
`Therefore, we found the “MME information adding module” limitation
`
`recited in claims 12–16 require construction pursuant to 35 U.S.C. § 112 ¶ 6.
`
`Id. at 9–10 (citing Williamson v. Citrix Online, LLC, 792 F3d 1339, 1349–50
`
`(Fed. Cir. 2015). Our rules require the Petitioner to construe means-plus-
`
`function limitations by “identify[ing] the specific portions of the
`
`specification that describe the structure, material, or acts, corresponding to
`
`each claimed function.” 37 C.F.R. § 42.104(b)(3).
`
`As discussed above, Petitioner alleges the ’166 patent fails to describe
`
`any structure corresponding to the recited functions performed by the MME
`
`information adding module. See Pet. 26–27. However, in an inter partes
`
`review, a petitioner may challenge the patentability of claims “only on a
`
`ground that could be raised under section 102 or 103 and only on the basis of
`
`prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
`
`Therefore, Petitioner alternatively alleges the corresponding structure is
`
`“software configured to perform the recited functions.” Pet. 27. However,
`
`as we found in our Institution Decision, Petitioner “fails to identify where
`
`the ’166 patent discloses and clearly links software to any of the functions
`
`performed by the MME information adding module.” Dec. Inst. 10. Thus,
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`Petitioner fails to construe this claim term. See B. Braun Medical, Inc. v.
`
`Abbot Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997) (finding a structure
`
`disclosed in the specification corresponds to a means-plus-function
`
`10
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`limitation only “if the specification or prosecution history clearly links or
`
`associates that structure to the function recited in the claim.”). For this
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`reason, we initially declined to institute review of claims 12–16. Dec. Inst.
`
`11, 34–35. However, in view of the SAS decision, we modified our
`
`Institution Decision to institute review of these claims. See Paper 27, 3.
`
`In its Supplemental Response, Patent Owner argues “the Petition did
`
`not identify any structure in the specification of the ’166 patent associated
`
`with the [MME information adding module] term, let alone the specific
`
`portions of the specification that describe a structure corresponding to each
`
`claimed function.” PO Supp. Resp. 10. As a result, Patent Owner argues,
`
`“Petitioner failed to meet the minimum requirements for challenging the
`
`patentability of an alleged means-plus-function claim,” and has “left Patent
`
`Owner and the Board without any meaningful way to assess Petitioner’s
`
`challenge to claim 12 and claims 13–16 that depend from it.” Id. at 11
`
`(citing 37 C.F.R. § 42.104(b)(3)). Patent Owner further argues a properly
`
`filed Petition requires Petitioner to “provide[] such other information as the
`
`Director may require by regulation,” including the corresponding structure
`
`of any challenged means-plus-function claims as required by 37 C.F.R.
`
`§ 42.104(b)(3). Id. at 12 (quoting 35 U.S.C. § 312(a)(4)). Therefore, Patent
`
`Owner argues “it would be unfair, improper and untenable” for the Board to
`
`analyze this means-plus-function limitation based on evidence that was not
`
`set forth in the Petition, and nothing in “the Supreme Court’s SAS Institute
`
`decision allows the Board to reach beyond the Petition” in determining the
`
`patentability of claims 12–16. Id.
`
`In its Reply, Petitioner maintains “its position that the patent
`
`specification lacks sufficient corresponding structure and therefore claims
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`11
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`12–16 are indefinite.” Reply 6. Petitioner also “requests that the Board
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`evaluate Patent Owner’s identification of corresponding structure as set
`
`forth in the Supplemental Patent Owner Response,” and sets forth reasons
`
`why Patent Owner’s identified structure is not corresponding structure for
`
`the claimed “MME information adding module.” Id. at 6, 9–10. Petitioner
`
`further requests we consider the patentability of claims 12–16 based on an
`
`analysis of the allegedly corresponding structure Patent Owner identified in
`
`its Supplemental Response. Id. at 7–8.
`
`In its Sur Reply, Patent Owner counters that we should reject the
`
`patentability analysis of claims 12–16 in Petitioner’s Reply. PO Sur Reply
`
`5–7. First, Patent Owner argues that in its Supplemental Response it “did
`
`not take any position regarding how the [MME information adding module]
`
`term should be construed in this proceeding,” but merely “explained that
`
`Petitioner had notice of Patent Owner’s position in the co-pending district
`
`court litigation concerning the proper construction of this term . . . before
`
`filing its Petition.” Id. at 5–6. Next, Patent Owner argues that although we
`
`were required to institute review of claims 12–16 per the SAS decision,
`
`Petitioner fails to cite any law that “lowered the ‘threshold’ requirements of
`
`a petition and would thereby forgive Petitioner’s failure to comply with 37
`
`C.F.R. § 42.104” in its Petition. Id. at 7.
`
`We note that in all of the post-Institution Decision briefing submitted
`
`by the parties, as summarized above, neither party has argued that we erred
`
`in determining the “MME information adding module” limitation is a
`
`means-plus-function limitation to be construed pursuant to 35 U.S.C. § 112
`
`¶ 6. Accordingly, we maintain that finding here. Additionally, neither party
`
`has argued that we erred in determining that Petitioner has failed to identify
`
`12
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`in its Petition any corresponding structure in the ’166 patent for the claimed
`
`“MME information adding module.” We maintain that finding here, as well,
`
`and discuss its consequences in § II.I, infra.
`
`2. MME Information for Identifying the MME
`
`This term appears in independent claims 1 and 12, and is required by
`
`all of the challenged claims. Ex. 1001, 17:50–51, 18:53–54. The ’166
`
`patent, in various places, discloses MME information is “information [that]
`
`can uniquely identify the MME accessed by the UE in the evolved network.”
`
`Ex. 1001, 6:15–16 (emphasis added); see also id. at 4:15–19, 7:37–42,
`
`13:23–26, 13:41–45, 15:60–62. The ’166 patent similarly discloses that
`
`what constitutes MME information depends on the LTE network
`
`configuration. Id. at 7:43–45. Thus, the MME information can consist of an
`
`MME-id, an MME-id + pool-id, or an MME-id + pool-id + PLMN-id
`
`depending on the LTE network. Id. at 7:46–49, 8:55–60, 10:7–13.
`
`Although the ’166 patent describes MME information as all of the
`
`information needed to uniquely identify an MME in an LTE network, the
`
`term is not used in such a restrictive manner in independent claims 1 and 12
`
`when these claims are construed as a whole. For example, claim 1 requires a
`
`UE to obtain a temporary identity from an MME in an evolved (LTE)
`
`network, wherein the temporary identity includes MME information for
`
`identifying the MME. Ex. 1001, 17:47–51. However, nothing in claim 1
`
`limits the configuration of the evolved network, and the ’166 patent
`
`discloses that different MME information is required to identify an MME in
`
`differently configured networks. Thus, in some networks, the MME
`
`information consists of an MME-id, a pool-id, and a PLMN-id. See id. at
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`6:29–31, 6:38–40, 10:7–13.
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`13
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`Claim 1 also requires the UE to add the MME information to a P-
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`TMSI in an access message. Id. at 17:52–54. The ’166 patent discloses
`
`adding different types of MME information to the P-TMSI field of an access
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`message, but doesn’t require adding all of the MME information to the P-
`
`TMSI. For example, the ’166 patent discloses the MME-id can be added to
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`the NRI portion of the P-TMSI, and the pool-id and PLMN-id can be added
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`to other portions of the P-TMSI, or to the P-TMSI signature and RAI fields
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`of the access message. Id. at 10:23–26. Significantly, the ’166 patent also
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`discloses “[t]he RAI, P-TMSI Signature, and P-TMSI can separately carry or
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`together carry the PLMN-id and the Pool-id.” Id. Thus, the P-TMSI can
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`separately carry MME information, or can carry MME information together
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`with the RAI and P-TMSI signature. That is, the ’166 patent discloses MME
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`information can be divided up among different fields of the RRC access
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`message.
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`In light of these disclosures, and construing claims 1 and 12 as a
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`whole, we construed “MME information for identifying the MME” in our
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`Institution Decision to mean “any information that can be used to identify
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`the MME in an evolved network.” Dec. Inst. 13; see also General Foods
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`Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1275 (Fed. Cir.
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`1992). (“[E]ach claim is an entity which must be considered as a whole.”)
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`(emphases in original); see also In re Chatfield, 545 F.2d 152, 158 (CCPA
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`1976) (“The requirement is that the invention set forth in a claim be
`
`construed as a whole”).
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`Although not expressly disagreeing with this construction, Patent
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`Owner argues that MME information must contain “a minimum quantum of
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`information that is capable of identifying the MME in an evolved network,”
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`Patent 8,483,166 B2
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`and “that minimum quantum of information is the complete MME-id, not a
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`portion or fragment of it.” PO Resp. 13. Thus, Patent Owner contends
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`MME information “must include at least the entire MME-id.” Id. at 18.
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`Petitioner contends “the Board should maintain the construction set
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`forth in its Decision on Institution.” Reply 5. Petitioner argues the’166
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`patent supports the construction in the Institution Decision because it
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`discloses placing the MME-id outside of the P-TMSI. Id. at 4–5 (citing Ex.
`
`1001, 11:49–51). Petitioner also argues claim 2 supports the construction
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`because it recites “the MME information comprises an MME-Identity
`
`(MME-id),” and if the “MME information recited in claim 1 must include ‘at
`
`least the entire MME-id’ as Patent Owner contends, then the language of
`
`claim 2 would be superfluous.” Id. at 4 (citing Ex. 1001, 17:57–64).
`
`Finally, Petitioner argues that Patent Owner is attempting to read limitations
`
`into the claims without “identify[ing] any lexicography or disavowal that
`
`would support redefining ‘MME information for identifying the MME’ as
`
`information that includes ‘at least the MME-id.’” Id. at 5 (citing Thorner v.
`
`Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012)).
`
`Upon consideration of the arguments and evidence presented by
`
`Patent Owner and Petitioner, we maintain our construction of “MME
`
`information for identifying the MME” to mean “any information that can be
`
`used to identify the MME in an evolved network.”
`
`Patent Owner does not dispute that information other than the MME-
`
`id is needed to identify an MME in certain types of LTE networks, such as
`
`those having MME pools. See PO Resp. 15; see also id. at 13 (agreeing that
`
`the ’166 patent discloses LTE networks having configurations that
`
`“implicate a need for additional information” to identify an MME, i.e.,
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`15
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`Patent 8,483,166 B2
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`information in addition to the MME-id). Nor does Patent Owner contend
`
`that the claims are limited to only certain types of LTE networks that can
`
`identify an MME using only the MME-id, such as networks that do not have
`
`MME pools. Tr. 32:20–33:5. Nor does Patent Owner dispute our finding
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`“that the ’166 patent ‘doesn’t require all of the MME information to be
`
`added to the P-TMSI field.’” PO Resp. 15 (quoting Dec. Inst. 13).
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`Given Patent Owner’s admissions and contentions, we see no reason
`
`to limit “MME information for identifying an MME” to information that
`
`includes at least an MME-id. A pool-id, like an MME-id, is information for
`
`identifying an MME. This is shown, for example, in Figure 6 of the ’166
`
`patent, which is reproduced below.
`
`
`
`Figure 6 is a schematic illustration of “combined MME/SGSNs in an
`
`embodiment of the invention.” Ex. 1001, 8:1–3. Blocks 1–7 represent
`
`MMEs having respective MME-ids 1–7. Id. at 8:3–4. The MME
`
`information needed to identify the leftmost MME in Figure 6 is its MME-id
`
`(MME-5) and its pool-id (pool-1). The MME-id alone is insufficient to
`
`identify the leftmost MME because there is another MME-5 shown in Figure
`
`6, i.e., MME-5 in pool-3. Thus, like the MME-id, the pool-id is information
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`used to identify the MME, i.e., it is “MME information for identifying the
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`MME.”
`
`Admittedly, in the network illustrated in Figure 6, the pool-id cannot
`
`uniquely identify an MME. However, neither can the MME-id. Moreover,
`
`Patent Owner agrees that the claims are not limited to certain types of LTE
`
`networks (i.e., those lacking MME pools) that can uniquely identify an
`
`MME using only the MME-id. Tr. 32:20–33:5. Patent Owner also agrees
`
`that the ’166 patent does not require all of the MME information to be added
`
`to the P-TMSI. See PO Resp. 15 (“The Board also correctly observed that
`
`the ’166 patent ‘doesn’t require all of the MME information to be added to
`
`the P-TMSI field.”) (quoting Dec. Inst. 13) (emphasis omitted). Thus, MME
`
`information is any information used to identify the MME, such as the pool-
`
`id or the MME-id. It does not need to be all of the information needed to
`
`identify the MME, and it does not need to include the MME-id.
`
`Moreover, claim 2 specifically requires the MME information added
`
`to the P-TMSI in claim 1 to be an MME-id. See Ex. 1001, 17:57–58. This
`
`implies that the MME information recited in claim 1 is broader, and is not
`
`limited to information that includes an MME-id. See Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“Differences among claims
`
`can also be a useful guide in understanding the meaning of particular claim
`
`terms”).
`
`Accordingly, for the reasons discussed above, we maintain the
`
`construction of “MME information for identifying the MME” set forth in our
`
`Institution Decision, namely, it is “any information that can be used to
`
`identify the MME in an evolved network.”
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`17
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`C. Level of Ordinary Skill in the Art
`
`Petitioner, relying on the declaration testimony of Dr. Williams,
`
`argues a person of ordinary skill in the art would have had at least a master’s
`
`degree in electrical engineering, computer science, or a related field, and two
`
`years of experience working with cellular telephony systems. Pet. 25 (citing
`
`Ex. 1014 ¶¶ 13–20). Patent Owner offers a slightly different definition,
`
`arguing a person of ordinary skill in the art would have had at least a
`
`bachelor’s degree in electrical engineering, computer engineering, computer
`
`science, or a related field, and two to three years of experience working in
`
`mobile telecommunications systems. PO Resp. 7. Patent Owner further
`
`contends the differences between the two definitions “do not appear to affect
`
`the interpretation of the teachings of the prior art or any of the patentability
`
`issues in this proceeding.” Id. at 8.
`
`We adopt Petitioner’s definition for a person of ordinary skill in the
`
`art, which is supported by the testimony of Dr. Williams. Nonetheless, we
`
`agree with Patent Owner that the differences between the parties competing
`
`definitions appear to be immaterial to any issue raised in this proceeding.
`
`D. Public Accessibility of TS 23.236, TR 23.882, and S2-073255
`
`Petitioner argues the 3GPP documents (TS 23.236, TR 23.882, and
`
`S2-073255) it relies on to challenge claims of the ’166 patent were stored,
`
`indexed, and publicly accessible from 3GPP’s FTP server. See Pet. 27–33.
`
`Petitioner relies on the testimony of Dr. Yaqub to demonstrate this public
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`accessibility. Id. (citing Ex. 1012 ¶¶ 26–69).
`
`According to Dr. Yaqub, “3GPP was formed to coordinate and
`
`facilitate the development of standards” for cellular communications.
`
`Ex. 1012 ¶ 18. 3GPP’s goal “is to provide its members with an environment
`
`18
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`to produce reports and specifications that define technologies covering
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`cellular telecommunications.” Id. ¶ 19. Network operators, handset
`
`manufacturers, and device manufacturers have all “been involved in the
`
`development of 3GPP standards.” Id. ¶¶ 18–19. 3GPP members contribute
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`technical specifications, technical reports, and feasibility studies at both
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`Working Group and Technical Specification Group levels. Id. ¶¶ 20–21.
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`Working Groups “meet regularly and also have quarterly plenary meeting[s]
`
`where member companies’ contributions, draft specification[s], and other
`
`discussion documents are presented for approval.” Id. ¶ 20.
`
`3GPP specification development “is an ongoing, collaborative effort
`
`involving hundreds of engineers from many companies,” and 3GPP catalogs
`
`that effort using “a very structured process.” Id. ¶¶ 24, 26. 3GPP names
`
`member contributed documents using a naming procedure based on a
`
`structured numbering system, whereby the numbers by which documents are
`
`named indicate the subject matter of the documents. Id. ¶ 28–29 (citing Ex.
`
`1022 §§ 4, 5A). Once named, documents are compressed and uploaded to
`
`the 3GPP FTP server as zipped files having the same name, and receive a
`
`date and time stamp indicating when the upload occurred. Id. ¶¶ 30, 33, 37.
`
`Once uploaded, documents are indexed on the 3GPP FTP server by subject
`
`matter (e.g., Working Group number), meeting number, and type. Id. ¶ 35.
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`Documents are also effectively indexed by date due to the sequential
`
`naming/numbering system. Id. Documents uploaded to the 3GPP FTP
`
`server are available indefinitely and without restriction, and any interested
`
`member of the public can freely access, download, print, reproduce, and
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`disseminate them. Id. ¶¶ 32–33. “Making the documents publicly available
`
`encourages discussion and promotes collaboration among Working Group
`
`19
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`members toward the establishment of industry standards for cellular
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`telecommunications.” Id. ¶ 31.
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`Dr. Yaqub further testifies that the functionality of the 3GPP FTP
`
`server, as described above, was present in October 1999, as evidenced by a
`
`printout from the Internet Archive’s “Wayback Machine,” which show the
`
`October 1999 landing page of the 3GPP TSG RAN group. Id. ¶ 41 (citing
`
`Ex. 1024). Dr. Yaqub testifies that this printout “refreshes and confirms
`
`[his] recollection as to how 3GPP’s website looked and could be navigate
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